DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Status of Claims
Responsive to the amendment filed 5 March 2026, claims 1 and 15 are amended and claim 29 is added. Claim 24 is cancelled. Claims 1-9, 12, 15-16, 18-23, and 28-29 remain pending. Claims 21-23 and 28 are withdrawn as directed to a non-elected invention.
Status of Previous Rejections
Responsive to the amendment filed 5 March 2026, new grounds of rejection are presented.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-9, 12, 15-16, 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 5614036 A (hereinafter “Imahashi”).
Regarding claim 1, Imahashi teaches an aluminum alloy with good properties for engine parts (see Filed of the Invention). Imahashi teaches an alloy composition which overlaps the claimed ranges (See claim 1 and claim 2). The composition of the alloy of Imahashi is compared with the claimed alloy in the chart below (all values in weight percent).
Element
Claim 1
Imahashi (claims 1-2)
Al
Ni
Ti
Zr
Si
Fe
Cu/Mg
Mo
B
About 90.8-98.1
About 1-6
About 0.5-2
About 0.4-1.2
--
--
--
--
--
Balance
2-15
0.5-4
0.3-3
0.2-15
0.6-8
0.3-6.0
0.3-3
0.05-10
The composition of the aluminum alloy of Imahashi overlaps the claimed compositional ranges, establishing a prima facie case of obviousness for the ranges. It would have been an obvious matter to one of ordinary skill in the art at time of filing to have selected a composition in the ranges claimed because Imahashi teaches the same utility over overlapping ranges. Applicant is directed to MPEP 2144.05.
Regarding wherein the alloy consists essentially of the composition represented by Al-Ni-Ti-Zr, the transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976). Absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." In this case there is no indication as to what elements should be excluded by the transitional language. Applicant is directed to MPEP 2111.03.
Regarding claims 2-9 and 12, Imahashi does not teach an example of an alloy with the compositions as claimed. However Imahashi teaches overlapping amounts of the alloying elements Ni, Ti, and Zr (see claims 1-2). It would have been an obvious matter to one of ordinary skill in the art at time of filing to have selected a composition in the ranges claimed because Imahashi teaches the same utility over overlapping ranges. Applicant is directed to MPEP 2144.05.
Regarding claims 15-16 and 18-19, Imahashi does not teach the microstructures as claimed. Imahashi does not specify the nucleation of any fine grains in the microstructure, but teaches that coarse crystals should be avoided (see cols. 3-4). For example, Imahashi teaches that at greater than 3.0% of Zr, coarse ZrAl3 would undesirably precipitate (bottom of col 4).
However, Imahashi teaches an aluminum alloy with an overlapping composition. It would have been an obvious matter to one of ordinary skill in the art at time of filing to have selected a composition in the ranges claimed because Imahashi teaches the same utility over overlapping ranges. Applicant is directed to MPEP 2144.05. The properties of the composition as claimed would have naturally flowed from following the suggestions of Imahashi, where an overlapping chemical composition is taught.
Regarding wherein the alloy consists essentially of the composition represented by Al-Ni-Ti-Zr, the transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976). Absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." In this case there is no indication as to what elements should be excluded by the transitional language. Applicant is directed to MPEP 2111.03.
Regarding claim 20, Imahashi does not teach an example of an alloy with the compositions as claimed. However Imahashi teaches overlapping amounts of the alloying elements Ni, Ti, and Zr (see claims 1-2). It would have been an obvious matter to one of ordinary skill in the art at time of filing to have selected a composition in the ranges claimed because Imahashi teaches the same utility over overlapping ranges. Applicant is directed to MPEP 2144.05.
Allowable Subject Matter
Claim 29 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The prior art does not teach or fairly suggest an alloy composition consisting of the elements required in the claim.
Response to Arguments
Applicant's arguments filed 5 March 2026 have been fully considered but they are not persuasive.
Applicant argues that the amended claim including the transitional “consisting essentially of” excludes the alloying elements disclosed by Imahashi. This argument is considered, but it is not persuasive because the argument is not commensurate in scope with what is claimed. The transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976). In this case there is no indication as to what elements should be excluded by the transitional language. Applicant is directed to MPEP 2111.03.
For example, applicant argues that the alloy of Imahashi would have had different processing capabilities, and different properties form what is now claimed. However applicant gives no examples as to what those differences might be. The skilled artisan understands that a composition and processing history affect the mechanical and physical properties of a given alloy system. It is not clear how that materially affects the alloy of the instant claims vis a vis the prior art. Further, the question of obviousness under 35 USC 103 is not whether any difference might be present, but rather whether the difference is patentably distinct. When all of the evidence is considered as a whole, evidence of obviousness outweighs evidence of patentability.
Applicant further argues that the specific elements as listed in Imahashi are excluded. If applicant wishes to exclude elements, then the claims may reflect that. In the instant case the examiner does not agree that the transitional “consisting essentially of” would have excluded the elements from Imahashi. The claims must be give n a broadest reasonable interpretation consistent with the specification. MPEP 2111. The claims are broader in scope than what is argued. Applicant’s claim 29, for example, uses the transitional “consisting of,” which is exclusive of other elements (outside inevitable impurities). Applicant is directed to MPEP 2111.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER S KESSLER whose telephone number is (571)272-6510. The examiner can normally be reached 9-5:30.
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CHRISTOPHER S. KESSLER
Primary Examiner
Art Unit 1734
/CHRISTOPHER S KESSLER/ Examiner, Art Unit 1759
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